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Text Box: Choosing an Attorney
Or Agent
 

 

Patent Agent vs. Patent Attorney

Checklist for attorney visit

Anyone serious about getting a patent should consult with a patent attorney or patent agent before filing a patent application.  A patent application is basically a proposed contract with the government requesting a monopoly on a certain invention and, when granted, the patent becomes an enforceable contract.  As with any contract, anything said in the patent may legally affect the validity of the patent.  Often, an independent inventor will not know what should and shouldn’t be written in a patent application.  An inventor can represent himself before the U.S. Patent Office, but unless he understands all of the laws and procedures in the patent office he is running a risk.  The wisest option for an inventor is to consult with a patent agent or attorney before he files a patent application.

A patent attorney or agent may advise an inventor on the best strategy to obtain a patent on his or her idea.  The attorney or agent may also file the inventor’s patent application for him.  Thus, the inventor needs to give the attorney or agent a limited power of attorney to represent the inventor before the United States Patent Office.  Anything that the attorney/agent or inventor says in correspondence with the patent office before and after a patent application is granted may affect the patent.  Thus, any correspondence that will be made public should be carefully worded.  Experienced patent attorneys or patent agents are familiar with these issues and can provide inventors invaluable assistance.

Patent Agent vs. Patent Attorney – A patent agent is a non-attorney with a technical background who has passed a bar administered by the U.S. Patent Office, which is referred to as the patent bar.  Members of the patent bar are authorized to represent individuals or corporations other than himself before the Patent Office.  Thus, a patent agent can only assist an inventor with matters at the United States Patent Office, which is generally the pursuit of a granted patent. 

In addition to having a technical background and being a member of the patent bar, a patent attorney also has a law degree and is a member of at least one state bar.  Thus, a patent attorney can provide inventors additional services, such as prepare license agreements, represent the inventor before federal and state courts, and give legal opinions about the scope and validity of competitors' patents.  In other words, the patent attorney can provide any legal service to the inventor, while the patent agent is limited to handling only legal matters before the United States Patent Office. 

Checklist for Attorney Consultation – Some attorneys work for a set fee while others charge clients by the hour.  In either case, an inventor will want to have a productive visit with his attorney.  During the visit, the inventor will provide the attorney a lot of information.  Below is a checklist of some of the information that the attorney will need.  Being prepared with this information will make the consultation more productive and may save the inventor money.

  • Title of the invention
  • Brief written description of the invention
  • Detailed written description of the invention
  • Descriptive drawings/figures of the invention
  • Date that the invention was conceived
  • Name(s) of the inventor(s) and their contribution
  • Prototype, pictures and/or video of the prototype
  • Description of background technology

The attorney may also ask the following questions:

  • How was the idea conceived?
  • Where was the idea conceived?
  • Do the rights to the invention belong to another party beside the inventor(s)?
  • Is a third party interested in a license?
  • What is the most likely industry that will benefit from the invention?
  • What other industries could benefit from the invention?
  • Has any part of the invention been published on a website, magazine, newsletter, advertisement, etc.?
  • Has any part of the invention been sold or been offered for sale?
  • Who knows about the invention?

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